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TTAB Clarifies Accelerated Case Resolution Procedure; Sustains Opposition

Thursday, February 23, 2012
Jennifer Gaeta | Bloomberg LawLebanon Seaboard Corp. v. R&R Turf Supply, Inc., Opposition No. 91197241 (T.T.A.B. Feb. 8, 2012) In an otherwise unremarkable likelihood of confusion opposition, the Trademark Trial and Appeal Board ("TTAB") took the opportunity to clarify Accelerated Case Resolution ("ACR") procedure. After the ACR procedure discussion, the TTAB analyzed the applicable likelihood of confusion factors, found a likelihood of confusion, and sustained the opposition.

The Parties Agreed to ACR

Citing its federally registered trademark TRIFECTA for "lawn seed," Lebanon Seaboard Corporation opposed, on likelihood of confusion grounds, R&R Turf Supply, Inc.'s intent-to-use application TURFECTA for "grass seed." Lebanon at 1-2. Lebanon has used its TRIFECTA mark since 1987. After discovery, the parties agreed to resolve the opposition via ACR, which "is an alternative procedure to typical Board inter partes proceedings that involve full discovery, trial and briefing." Id. at 3. Different approaches to ACR include stipulations by the parties to the submission of trial testimony with legal arguments, as in a summary judgment motion, or stipulations as to certain facts and evidence. As was the case here, parties may also agree to a combination of these approaches.

TTAB Clarifies ACR Procedure

The parties filed their briefs concurrently with their testimony, and opposer objected to paragraphs 12-14 of applicant's declaration in its reply brief. This, however, was not the first time opposer had declared its objection. The TTAB noted that the original objection to the testimony was communicated to applicant in a letter prior to the filing of the brief, in accordance with the parties' stipulation. Applicant did not respond to the objection when it was communicated in the letter, or when it was made in opposer's reply. The parties had agreed in their ACR stipulation to offer testimony by declaration or affidavit, which would then be served on the adverse party at least 21 days before the brief was due. The parties then could object to the testimony at least 14 days before the briefs were due. Here, it appeared that the applicant did not submit the testimony into the record, but rather sent a draft copy to opposer's counsel more than 21 days before the brief was due. Opposer's counsel sent the letter stating that it would appreciate the removal of paragraphs 13 and 14 from the declaration (it later added paragraph 12 in its reply). There was no indication as to any response by applicant, and applicant filed the declaration, including the disputed paragraphs, along with its brief. "Thus, we have a situation in which opposer raised its objection with applicant within the time set forth in the stipulation, but the formal objection was filed with the Board at a point where applicant may have believed that it could not respond." Lebanon at 9. In other words, the procedure for addressing these objections that the parties had agreed to in their ACR stipulation, seemingly created a confusing situation in which applicant may not have known when to respond to the objection. — Parties Should Contact TTAB Attorney Regarding Procedure Because of this ineffective and confusing procedure, and because the parties failed to contact the assigned TTAB attorney, the TTAB questioned the parties' intent in proceeding with ACR. "The better practice when parties agree to proceed by ACR is to discuss the proposed process with a Board attorney, either to help frame the agreement, or to modify or amend the agreement, as may be necessary to promote clarity, once it has been entered into and filed with the Board." Lebanon at 9 n.9. — TTAB Would Have Considered Response Post-Reply in this Special Circumstance The TTAB also clarified that although it usually does not entertain any paper filed after the reply brief, it would have in this unusual circumstance, if applicant had responded to objections made in the reply brief. — Parties Should Not Have Included Evidence Underlying Facts to Which They Had Stipulated While the TTAB stated that the use of ACR was admirable, and that it would normally save the TTAB time and effort, it did not do so here. The TTAB pointed out that although the parties stipulated to a number of facts, they still submitted evidence on these points. "By doing so, the parties have gone to needless effort and expense, and the Board must unnecessarily review this evidence." Id. at 10. — TTAB Resolves Fact Disputes at Trial Finally, the parties stipulated in their ACR agreement that the TTAB could resolve disputed issues of fact on the merits. The TTAB pointed out that such a stipulation was more appropriate in the context of a summary judgment motion. This was a trial on the merits, and the TTAB was already tasked to resolve any disputed facts. The TTAB stated, however, that although this stipulation was unnecessary, it does not discourage the use of the stipulation.

Turning to the Merits, TTAB Sustains Opposition

The TTAB applied the applicable likelihood of confusion factors as established in E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). In doing so, it found that TURFECTA and TRIFECTA were likely to be confused. First the TTAB noted that the parties stipulated that the goods were legally identical, and were presumed to travel in the same channels of trade. These factors weighed in favor of a likelihood of confusion. The parties did not present argument on the sophistication of consumers, and the TTAB found this factor neutral. On strength of the mark, the TTAB found that TRIFECTA as used with lawn seed was arbitrary. Moreover, although the mark was not famous because it did not have any context for the submitted advertising figures and how those figures compared in the industry, nor was there evidence of brand awareness or press coverage, it nevertheless found the mark strong and entitled to a broad scope of protection. It noted the mark's use since 1987, and that there was no evidence of any similar marks used on similar goods. Although applicant argued that the "FECTA" letter string was used commonly, the TTAB found that the TRIFECTA mark was the only mark with the "FECTA" letter string to be registered for grass seed. The TTAB found the marks similar in sight, sound, and meaning. On meaning, applicant argued that the TTAB should discount the "FECTA" portion as laudatory because there were 56 marks that used some form of "FECTA" generally to import the Spanish term, PERFECTA. The TTAB declined to do so because consumers were not likely to view the "FECTA" portion of the mark apart from the mark as a whole, which had its own dictionary definition and meaning. The TTAB also found that consumers were likely to see TURFECTA as a play on TRIFECTA, with "turf" replacing "tri." On actual confusion, the TTAB noted that although there was no evidence of actual confusion, the concurrent use of the marks thus far had been quite limited. Finally, applicant had argued that it chose the mark in good faith. The TTAB noted, however, that good faith would not eliminate a likelihood of confusion. Accordingly, the TTAB sustained the opposition. DisclaimerThis document and any discussions set forth herein are for informational purposes only, and should not be construed as legal advice, which has to be addressed to particular facts and circumstances involved in any given situation. Review or use of the document and any discussions does not create an attorney-client relationship with the author or publisher. To the extent that this document may contain suggested provisions, they will require modification to suit a particular transaction, jurisdiction or situation. Please consult with an attorney with the appropriate level of experience if you have any questions. Any tax information contained in the document or discussions is not intended to be used, and cannot be used, for purposes of avoiding penalties imposed under the United States Internal Revenue Code. Any opinions expressed are those of the author. The Bureau of National Affairs, Inc. and its affiliated entities do not take responsibility for the content in this document or discussions and do not make any representation or warranty as to their completeness or accuracy.©2014 The Bureau of National Affairs, Inc. All rights reserved. Bloomberg Law Reports ® is a registered trademark and service mark of The Bureau of National Affairs, Inc.

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